Tuesday, June 19, 2007

CAFC in OmegaFlex suggests TSM test is still around in obviousness inquiry

Further to the discussion of Michael Barclay's position that the Supreme Court in KSR "abolished" the TSM test (and replaced it with a marketplace test), the CAFC in the nonprecedential case Omegaflex v. Parker-Hannifin is giving strong signals that it considers the TSM test alive and well.

Procedurally, the accused infringer (Parker-Hannifin) was appealing a grant of summary judgment of patent validity. In the Omegaflex decision, the CAFC reversed the SJ of validity.

The key cite to KSR by the CAFC in Omegaflex was: The Supreme Court recently explained that "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR, 127 S. Ct. 1727, 1741 (2007). The next sentence in Omegaflex includes the words: reason... to combine. It cites to Dystar, in turn citing to Dembiczak, the latter a pre-KSR case. And, yes, the problem in Omegaflex was (as was the problem in KSR)that the district court did not give weight to certain expert testimony (in OmegaFlex, that of David Geary (testifying for the nonmovant in the motion for SJ of VALIDITY)). Although we have a role reversal here relative to KSR (the CAFC decision in Omegaflex is AGAINST the patentee while the CAFC decision in KSR was FOR the patentee), the CAFC is still making points about the way it handled KSR. In BOTH Omegaflex AND KSR, the CAFC was reversing an SJ ruling, because of the presence of disputed issues of material fact.

After the CAFC made its point about the continued presence of TSM, the "reasonable expectation of success" standard was discussed. Again, the CAFC found that the district court disregarded the testimony of expert Geary. The CAFC cited no case on the "reasonable expectation of success" standard.

See also
Is TSM still required to establish obviousness? [May 7, 2007]


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